Copyright & Trademark Matters

Insights and Developments in Copyright and Trademark Law

Don’t Even Think About Advertising a SUPER BOWL Party!

Posted in Dilution, Famous Marks, Lanham Act, Litigation, Trademark

Written by: Susan Neuberger Weller

As we all know, Super Bowl XLIX will be played this Sunday in Phoenix, Arizona between the defending Champion Seattle Seahawks and the New England Patriots. There will be events of all kinds organized all around the country focused on this football game. If you are planning something, just remember: do not use “Super Bowl” by itself or in conjunction with other words or terms in any commercial promotions of any kind including your own events, third-party events, contests, games, product promotions, or sales. You just can’t do it.

“SUPER BOWL” is a federally registered trademark owned by the National Football League for use in connection with products and services related to this athletic event. This gives it exclusive nationwide rights to use the term on and in connection with these goods and services and prohibits anyone else from using the term in any way that would suggest any type of association, affiliation, sponsorship, endorsement, licensed status or other connection between it and the NFL, when in fact no such status exists. And the NFL takes this very seriously as do its official licensed partners and sponsors, who pay a great deal of money for the right to use the registered trademark SUPER BOWL for various commercial purposes.

Although the NFL’s SUPER BOWL mark does not enjoy the very specific protected status provided to the Olympic trademarks under federal statute, 36 USC 220506(c), its level of protection is extremely broad given its long-term use, registered status, notoriety and fame. Thus, the NFL has a great deal of legal muscle behind it when it pursues third parties for unauthorized use of the SUPER BOWL mark.

The fact that the NFL and its officially licensed partners and sponsors may not always use the ® federal registration symbol in connection with the SUPER BOWL mark, does not diminish the scope or strength of its exclusive rights in this phrase.

You may notice various third-party references to “THE BIG GAME” around the time the SUPER BOWL is scheduled. This is an effort to refer to the game without having the NFL swoop down to assert trademark infringement.

In past years, the NFL has been very aggressive in going after third party use of  other words or phrases associated with the SUPER BOWL, such as the “Who Dat” controversy involving the New Orleans Saints in 2010. Whether it will attempt to assert proprietary rights in any words or phrases associated with this SUPER BOWL,  including the  current “Deflategate” scandal, remains to be seen.  (At least as of this writing, no one had filed any trademark applications for “Deflategate”.)

As for all the businesses out there, unless you have inked a licensing agreement with the NFL to use SUPER BOWL for any commercial purpose, consider yourself warned not to do so. “THAT BIG GAME SUNDAY” will have to do.

The US Supreme Court Holds that Juries Should Decide the Issue of Trademark Tacking

Posted in Tacking, Trademark

Written by: Susan Neuberger Weller

In the first substantive trademark decision it has issued in a decade, the US Supreme Court, in Hana Financial, Inc. v. Hana Bank, case number 13-1211 (January 21, 2015), affirmed the Ninth Circuit by holding that whether two marks may be tacked for purposes of determining priority is a question for the jury.

The case involved two organizations providing financial services to individuals in the United States. The Respondent Hana Bank had been operating under that name in Korea since 1991, and first began to advertise its services to Korean expatriates in the US in 1994. Advertisements for those services in the US first appeared in Korean and in English under the name “Hana Overseas Korean Club,” and included the name “Hana Bank” in Korean. In 2000, it changed the name of “Hana Overseas Korean Club” to “Hana World Center,” and in 2002 began operating a bank in the United States under the name “Hana Bank.” This latter enterprise was its first physical presence in the United States.

Petitioner Hana Financial was established in 1994 as a California corporation and began using that name and an associated trademark in 1995. In 1996, it obtained a federal trademark registration for a logo design incorporating the name “Hana Financial” for use in connection with financial services.

In 2007, Hana Financial sued Hana Bank alleging trademark infringement. Hana Bank denied infringement by claiming that under the tacking doctrine it had priority of use of the mark “Hana” for financial services in the United States. The trial jury found in favor of Hana Bank and the Ninth Circuit affirmed that decision on appeal. Since there was a split among the federal circuit courts as to whether tacking should be decided by juries or judges, the Supreme Court granted Hana Financial’s writ of certiorari.

So what is “tacking”? The general rule is that use of two marks may be “tacked together” for purposes of establishing priority of use when the original mark and the revised mark are “legal equivalents.” Marks are “legal equivalents” when they “create the same, continuing commercial impression” so that consumers “consider both as the same mark.” There is no dispute that the commercial impression that a mark conveys must be viewed through the eyes of the consumer. Thus, Justice Sotomayor, writing for a unanimous Court, stated that pursuant to long recognized doctrine, “when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.”  Accordingly, the Court held that when the facts do not warrant entry of summary judgment or judgment as a matter of law on the question of tacking, the question of whether tacking is warranted must be decided by a jury.

The lesson here for trademark owners is to ensure that archival records of your use of your marks over time are diligently maintained. This will help ensure that in the event the mark is changed in any way for purposes of modernization or otherwise, you have sufficient evidence to prove your earliest date of first use of the “legally equivalent” mark to defend against claims of infringement.

“Copyright and Marriage Equality Act” Bills Introduced in both the House and Senate

Posted in Copyright, Transfer

Written by: Susan Neuberger Weller

On January 6, 2015, Sen. Patrick Leahy introduced Senate bill 23 entitled the “Copyright and Marriage Equality Act.” The bill would amend Section 101 of title 17 of the United States Code by striking the current definitions of “widow” and “widower” and replacing them with the following:

“An individual is the ‘widow’ or ‘widower’ of an author if the courts of the State in which the individual and the author were married (or, if the individual and the author were not married in any State but were validly married in another jurisdiction, the courts of any State) would find that the individual and the author were validly married at the time of the author’s death, whether or not the spouse had later remarried.”

The purpose of the amendment is to address the transfer of a copyright to an author’s spouse or other next of kin following the author’s death. There were five original cosponsors of the bill.

On January 9, 2015, Rep. Derek Kilmer introduced in the House a corresponding bill, H.R. 238. That bill had 19 original cosponsors.

Both bills have been referred to their respective Committees on the Judiciary. We will keep you posted on the status of any action on each bill.

The US Department of Justice Seeks to Intervene in the Washington Redskins’ Trademark Suit to Defend the Constitutionality of the Lanham Act

Posted in Disparaging Marks, Lanham Act, Section 2(a), Trademark, Trademark Trial and Appeal Board, Uncategorized

Written by: Susan Neuberger Weller

The Washington Redskins professional football team will soon not only be battling Native Americans over the registrability of the REDSKINS trademark, but will also have to cross swords with the US Government. Last week, the US Department of Justice filed a Notice of Intervention in the appeal of the US Trademark Trial and Appeal Board’s decision last summer to cancel the REDSKINS trademark registrations. As we reported in our earlier post, the Washington team raised in its appeal constitutional issues that could not be decided by the TTAB. These include the following:

  • Trademarks are constitutionally protected commercial speech and Section 2(a)’s provisions prohibiting the registration of “disparaging, “”contempt[uous]”, or “disreput[able]” aspects of a mark are  an unconstitutional, content-based restriction on speech that violates the First Amendment to the US Constitution.
  • Section 2(a) is facially overbroad and  unconstitutionally void for vagueness in violation of the First Amendment to the US Constitution since, inter alia, the terms “disparage,” “may disparage,” “contempt,” “disrepute,” and “may bring…into contempt or  disrepute” are not defined in the Lanham Act or its legislative history.
  • The cancellation of the REDSKINS registrations violate  the team’s due process rights provided by the Fifth Amendment to the US Constitution by unreasonably depriving the team of federally granted property rights that it has relied on for almost half a century.
  • The Board’s Order canceling the REDSKINS trademark registrations is an unconstitutional taking of Pro-Football’s property without just compensation in violation of the Takings Clause of the Fifth  Amendment to the US Constitution.

The Notice of Intervention states that the US Government will be defending the constitutionality of Section 2(a) of the Lanham Act, and is entitled to do so as a matter of right pursuant to the Federal Rules of Civil Procedure and statute.

As of this writing, no responsive pleadings have yet been filed by either the team or the Native Americans. Stay tuned.

Top Ten Reasons Why US Trademark Searches are Important to Every Business

Posted in Domain Name, Searching and Clearance, Trademark

 As we ring in the new year, we thought we would remind everyone why the importance of a comprehensive trademark search  for a new company name and for a new trademark cannot be overstated:

1. Any word in any language can function as a trademark depending on how it is used.

2. Every business has at least one company name, trade name, brand name, logo, or slogan it uses to advertise its goods or services, making it vulnerable to a claim of infringement if the use has not been cleared properly.

3. A Secretary of State’s clearance and registration of a name for a corporation or other business entity is NOT a defense to a claim of trademark infringement.

4. Unlike copyright infringement, trademark infringement can be innocent. Prior knowledge of a preexisting trademark is not required for infringement liability to exist.

5. Domain names alone do not create trademark or similar protected rights, but can violate trademark rights.

6. Marks do not need to be identical or used competitively in order to be infringing.

7. Famous marks and names should never be used even for completely unrelated purposes.

8. Unregistered common law marks are valid and fully enforceable in the United States.

9. There is no such thing as international or worldwide trademark rights. Trademark rights exist on a country-by-country basis. In most countries, the first to file a trademark application and obtain a registration owns the rights in that country. Use without registration is irrelevant. Foreign rights should be searched and/or applied for before any public announcements of expansion plans.

10. Trademarks are a use-it-or-lose-it asset. Unlike patents and copyrights, trademarks can exist forever if they are being used. Intent-to-use applications can be filed for trademarks for which there are plans underway but which may not be placed into actual use for, at least, four years.

A thorough trademark search is one of the best investments a company can make in a new endeavor. No one wants to invest time, money, and effort in a new name or mark only to find out later that all is lost, including  the initial  goodwill and reputation developed under that new name and mark.  So do not simply choose a new name or mark wisely, also search it well.

 

The US Trademark Office Rings in the New Year with Some Reduced Fees!

Posted in Uncategorized

It is not only the price of oil and gas that is dropping! The US Trademark Office has reduced the filing fees for new trademark applications and for registration renewal applications. The previous filing fee for each class in a new trademark application was $325. Effective immediately, this fee has been reduced to $275 per class. The per class filing fee for US registration renewal applications was $500 per class, and has now been reduced to $400 per class.

So, celebrate the new year by taking advantage of these fee reductions and get to those trademark applications you have been meaning to file.

Trademark Licensees May Be Protected in a Licensor’s Bankruptcy Even After a “Free and Clear” Sale

Posted in Bankruptcy, Trademark, Trademark Licensing

Written by: Kevin J. Walsh and Eric R. Blythe

The Bankruptcy Code generally permits intellectual property licensees to continue using licensed property despite a licensor’s bankruptcy filing. However, because the “intellectual property” definition in the Bankruptcy Code does not include “trademarks,” courts have varied on whether trademark licensees receive similar protection. A New Jersey bankruptcy court recently grappled with this issue, concluding that trademark licensees may retain their trademark rights. The court further concluded that such protections remain intact despite a section 363 “free and clear” sale to a third-party.  To read more about this case,  please access the full version of this Bankruptcy Advisory prepared by the Mintz Levin Bankruptcy Practice.

 

It’s a Material IP World: Trademarks, Copyrights, Design Patents and Fabric Designs

Posted in Copyright, Copyright Infringement, Distinctiveness, Fabric Design, Fashion, Fashion, Product Design, Section 2(e) - Functionality, Section 2(f), Trademark, Trademark Infringement

Written by: Susan Neuberger Weller

Fabric design is a creative art form that has existed for thousands of years. Although the methods for creating such designs have evolved, the purpose and function of such designs has not changed as significantly.  Fabric designs are used for purely ornamental and decorative purposes, for purposes of identity, and also to convey information.  From an intellectual property standpoint, how a fabric design is used may dictate what type of protection it can claim. In addition, the time it takes to obtain each type of IP protection, its duration, and the procedures for enforcement may also dictate the type of protection to seek. Continue Reading

Washington Redskins Challenge the Constitutionality of Section 2(a) of the Lanham Act

Posted in Disparaging Marks, Section 2(a), Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

The Washington Redskins trademark controversy is far from over. Despite the fact that certain news and sports commentators and mainstream newspapers and organizations have announced that they will no longer use the term “Redskins” when reporting on the National League football team, and the fact that a variety of public figures, including President Obama, have expressed an opinion that the name should be changed, team owner Dan Snyder continues to steadfastly defend the name as expressing only “honor and respect” and state that he has no intention of ever changing it. In support of that promise, the team has appealed the cancellation of its US trademark registrations by the US Trademark Trial and Appeal Board which held in a split 2-1 decision that the REDSKINS trademark was disparaging to Native Americans and, therefore, no longer eligible for continued registration. Continue Reading

Copyright Ownership is not Monkey Business: Wikimedia and Slater Fight Over Selfie Photographs

Posted in Uncategorized

Written by: Susan Neuberger Weller

A simmering dispute about ownership of a copyright in photographs has now garnered international attention. As more fully reported in an article in the British newspaper The Telegraph, British photographer David Slater has stated that he intends to bring a copyright infringement suit in the U.S. against Wikimedia, the nonprofit entity behind Wikipedia, focused on photographs taken by a crested black macaque monkey in Indonesia in 2011. Slater had been in Indonesia on a photo shoot when his camera was grabbed by a monkey which then took some amazingly good selfies with Slater’s camera. Some of these photographs can be seen on  Slater’s website, the Wikimedia website, and in The Telegraph article. Slater claims to own the copyright in the photos because he owned the camera with which they were taken. Wikimedia claims that the photographs are not protected by copyright and are in the public domain since they were taken by a monkey, and not a human. Accordingly, it has refused Slater’s requests to remove the photographs from the Wikimedia site. Continue Reading